A patent may be obtained for a design of an article of manufacture, provided its function is not exclusively ornamental.  (See Securing Valuable Design Protection for Consumer Products)  A design patent protects the ornamental shape or appearance of an article, i.e., the visual characteristics or aspects displayed by the article.  Articles that may be eligible for design patent protection include, for example, containers, bottles and dispensers for various consumer products; shoes; car parts such as wheels; furniture and household accessories; and machines such as vacuum cleaners or hair dryers.  To be patentable, a design must be new, original and ornamental.  Further, it must not have been obvious to a hypothetical designer skilled in the art from previously known designs.  Although a design patent for a utilitarian article may be issued, the ornamental features must dominate the functional features.  If a design is predominantly utilitarian in character, it cannot be protected by a design patent (however, the design may be eligible for utility patent protection).

 

 

Ordinarily, no description, other than a reference to one or more drawings depicting the design, is required in a design patent application.  Although design patent applications are examined and the applicant may have to respond to a patent examiner’s arguments that the design is not patentable, typically such applications are processed and granted much more quickly than utility patent applications.  Design patent applications are not published or laid open for public inspection, unlike utility patent applications.  The term of a design patent is 14 years from issuance; no maintenance fees are due during the life of a design patent.  Typically, the total costs associated with securing a design patent are about $2000-4000, depending upon the complexity of the design and the difficulties encountered during examination.

 

 

As with other types of patents, a design patent gives its owner the legal right to exclude others from making, using, selling or importing products that fall within the scope of the patent.  Unlike utility patents which contain written claims that define in words what the invention is, design patent claims simply refer to one or more drawings illustrating the invention.  To enforce a design patent, an owner has to demonstrate that, to an ordinary customer familiar with prior art designs, an infringer's accused design “embodies the patented design or any colorable imitation thereof." (See A New Test for Design Patent Infringement)  The accused design need not be identical in every respect to the design shown in the patent for infringement to be found.  However, if the accused design is closer to known designs than the design in the patent, it may be difficult to convince a court that infringement has occurred.  As with utility patents, monetary damages and injunctive relief (preventing the infringer from making further sales) may be available to the design patent owner who prevails in litigation. 

 

 

 

The foregoing comments pertain to U.S. design patents; the laws of other countries may vary.  Not all countries offer design patent protection.  Moreover, even where design patents are available, certain types of designs may not be eligible.  However, in countries such as China, a design patent may provide much more cost-effective, enforceable and timely protection against counterfeiters and copyists than a utility patent, provided the innovative product is in some way eligible for a design patent.  Many countries allow priority to be claimed from a U.S. design patent application; such foreign filing generally must be completed within six months of the U.S. filing.

 

 

©RatnerPrestia 2012, all rights reserved.  Copying for individual use authorized, with acknowledgement of source.